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  • Doctrine of Equivalents: Impact of Recent Latest Federal Circuit Decisions on Prosecution and Litigation (RECORDING)

    Contains 3 Component(s)

    This webinar will help practitioners understand the nuances of the Federal Circuit’s recent DOE jurisprudence, as well as give practical tips both on how to build a case for infringement under the DOE and to defend against it.

    In early September, in a brief order, the Federal Circuit announced it was deleting a line it wrote this spring that the doctrine of equivalents (DOE) applies only in cases deemed "exceptional." In a way, the Court was only catching up with two opinions released in August, Eli Lilly & Co. v. Hospira, Inc., and Ajinomoto Co., Inc. v. ITC, that have given hope to patent owners that the DOE is not DOA in a courtroom.

    At the center of the issue is one of the exceptions to the general rule that an amendment to a patent application that narrowed a claim creates a bar to equivalents for that claim limitation. Patent owners may rebut prosecution history estoppel by demonstrating that the rationale for an amendment bore no more than a tangential relation to the equivalent in question The importance of this exception cannot be understated as, when applied, prosecution history estoppel can still have a fearsome bite, as demonstrated in another summer decision of the Federal Circuit, Amgen Inc. v. Coherus Biosciences Inc.   

    This webinar will help practitioners understand the nuances of the Federal Circuit’s recent DOE jurisprudence, as well as give practical tips both on how to build a case for infringement under the DOE and to defend against it. Our panel includes top litigators, including the two that won these cases in August. It also will offer tips for prosecution at the USPTO, particularly regarding how to narrow claims in the least damaging way.

    Speakers:

    John Livingstone, Finnegan

    Sailesh Patel, Schiff Hardin

    Adam Perlman, Williams & Connoly

    John Livingstone

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    John Livingstone is managing partner of the Atlanta office of Finnegan. He is a first-chair trial lawyer focusing on complex pharmaceutical, chemical, and biotechnology patent litigation before U.S. district courts, the ITC, and the PTAB. John was resident in Finnegan’s Tokyo office for four years and frequently helps global clients with U.S. patent issues. He successfully represented Ajinomoto at the ITC and the Federal Circuit. 

    Sailesh Patel

    Schiff Hardin

    Sailesh Patel is a partner at Schiff Hardin. He is co-leader of its IP Group, also co-chairs the firm’s Pharmaceuticals and Biologics Patent Litigation Team, and serves on the firm’s executive committee. He frequently represents generic companies in Hatch-Waxman litigation. He has also represented clients in cases involving wind and solar technology, food processing, automotive components, and software, among other industries.  He has argued several cases at the Federal Circuit that involved the doctrine of equivalents.

    Adam Perlman

    Williams & Connolly LLP

    Adam Perlman is co-chair of the Patent Litigation Practice at Williams and Connolly. He focuses on representing innovator pharmaceutical manufacturers in Hatch-Waxman litigation. He was lead trial counsel for Eli Lilly and Company at three bench trials over the validity and infringement of a Lilly patent protecting its anti-cancer drug Alimta, which has annual U.S. sales of over $1 billion. 

  • Federal Circuit v. USPTO: Chevron Deference? (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 09/19/2019

    Facebook v. Windy City Innovations is the first case at the Federal Circuit centering on deference to the USPTO since the Supreme Court’s recent decision in Kisor v. Wilkie. Even before Kisor, appellants at the Federal Circuit and the Supreme Court had already succeeded in arguing against Chevron deference in such cases as SAS v. Iancu. In the current showdown, the Federal Circuit has invited the USPTO to file a brief saying “what, if any, deference” the Court should give to Precedential Opinion Panel decisions. The USPTO’s brief is due on Sept. 17th, just in time for it to be discussed on the webinar.

    Some commentators would say there is an extraordinary face-off currently playing out between the Federal Circuit and the USPTO on the issue of deference. This was perhaps inevitable after the AIA established the PTAB seven years ago as a venue with broad power to adjudge the validity of issued patents, giving to the USPTO, an administrative agency, rights that previously had been exercised largely by Article lll Courts. 

    Facebook v. Windy City Innovations is the first case at the Federal Circuit centering on deference to the USPTO since the Supreme Court’s recent decision in Kisor v. Wilkie. Even before Kisor, appellants at the Federal Circuit and the Supreme Court had already succeeded in arguing against Chevron deference in such cases as SAS v. Iancu. In the current showdown, the Federal Circuit has invited the USPTO to file a brief saying “what, if any, deference” the Court should give to Precedential Opinion Panel decisions. The USPTO’s brief is due on Sept. 17th, just in time for it to be discussed on the webinar.   
    Our panel, which includes a former chief judge of the Federal Circuit, a former solicitor of the USPTO who is a professor of law, and the litigator who successfully argued SAS at the Supreme Court, will predict how these issues will play out and explore the implications for your practice.

    Our panel, which includes a former chief judge of the Federal Circuit, a former solicitor of the USPTO who is a professor of law, and the litigator who successfully argued SAS at the Supreme Court, will predict how these issues will play out and explore the implications for your practice.

    Speakers:

    Gregory Castanias, Jones Day
    Todd Walters, Buchanan Ingersoll & Rooney PC
    Prof. John Whealan, GW Law 

  • Inherency in Obviousness and Anticipation (RECORDING)

    Contains 5 Component(s), Includes Credits

    This webinar will discuss recent Federal Circuit cases that tackle the difficult subject of inherency, which is often not well understood. It will also draw important lessons for patent prosecution.

    The doctrine of inherency can be a complex one to navigate.  Drawing upon lessons that can be learned from Federal Circuit opinions, this webinar will address how to avoid pitfalls in district court litigation and PTAB proceedings involving inherency, and also provide important tips for patent prosecution. 

     
    Earlier this year, the Federal Circuit reversed Apple, Inc.'s successful challenge to software developer Personal Web Technologies data processing patent at the PTAB. "The board's reliance on inherency for [an] element in its obviousness analysis was improper," the panel said. The Federal Circuit explained that that the PTAB’s understanding of the prior art might be possible, but ruled that "mere possibility is not enough." 
     
    Other Federal Circuit decisions also provide insights regarding this subject.  Endo Pharmaceuticals Solutions v. Custopharm Inc. held that prior art did not inherently disclose a composition’s vehicle formulation.  In Southwire Co. v. Cerro Wire LLC, the Court explained that “inherency may supply a missing claim limitation in an obviousness analysis” but “the limitation at issue necessarily must be present.”   
     
    The panelists will discuss these cases, and more, and provide their views on the best practices to address inherency issues in patent prosecution and litigation.

    Speakers:


    Mark Feldstein, Finnegan

    Paul Steadman, DLA Piper

    Robert Greene Sterne, Sterne Kessler Goldstein Fox

    Mark Feldstein

    Finnegan

    Mark Feldstein is a partner at Finnegan. He is a patent and trade secret litigator in U.S. district courts and also serves as lead counsel for clients in post-grant trial proceedings at the USPTO. He also maintains an active patent prosecution practice on behalf of domestic and foreign clients.  His practice encompasses issues involving pharmaceuticals, biochemistry, polymers, small molecule chemistry, nanotechnology, optics, and medical and analytic devices.  He holds a Ph.D. in chemistry.

     

    Paul Steadman

    DLA Piper

    Paul Steadman is a trial lawyer and partner at DLA Piper. Paul represents global clients primarily in the automotive, electronics, and heavy industry sectors. He has a long track record litigating patent and trade secret cases, representing clients in Section 337 cases at the International Trade Commission, and arguing appeals to the Federal Circuit. He has represented a number of clients in matters where inherency was a central issue, including Cerro Wire in a successful Federal Circuit appeal. 

    Robert Sterne

    Sterne, Kessler, Goldstein & Fox, PLLC

    Robert Greene Sterne is a founding director of Sterne Kessler Goldstein & Fox. He has been involved in many consequential patent cases, including as co-counsel in KSR International Co. v. Teleflex, Inc. and as successful patent reexamination counsel for i4i in Microsoft Corp. v. i4i.  He was the lead attorney in In re Beauregard, which addressed whether a computer program functionality on a disk was patentable subject matter. His firm has substantial experience in PTAB proceedings. 

  • Recent Developments in China IP (RECORDING)

    Contains 7 Component(s), Includes Credits

    In this webinar you will learn about various changes which have occurred under Chinese law as well as proposed changes which are currently under consideration.

    As China continues its mandated transition from a manufacturing country to an innovation state, China has taken dramatic steps to enhance the mechanisms for both acquisition and enforcement of various intellectual property rights. In this webinar you will learn about various changes which have occurred under Chinese law as well as proposed changes which are currently under consideration. More importantly, you will learn about how many of these changes could impact how foreign entities do business in China and what steps they may take to help navigate the ever changing IP landscape in China.

    The panelists are in house counsel and private practitioners experienced in managing IP assets and/or litigations. Our panel, led by moderator Bob Siminski (Harness, Dickey & Pierce, P.L.C.), will discuss:
    • The current status of the 4th Amendment to the Patent Law, and the areas of changes of particular interest to IPO members
    • Development in the IP court system, including the newly-established national IP appellant court – the IP Tribunal of the Supreme People’s Court.
    • Recent amendments and proposed amendments to the Patent Examination Guidelines
    • Other recent changes and proposed changes in patent invalidity administrative proceedings, the Foreign Investment Law, Special Review and Approval Procedure for Innovative Medical Devices.

    Speakers:

    Hsin Lin, Exxon Mobil Corp.

    Michelle Shen, Medtronic Inc.

    Vivian Zhang, Advance China IP Law Office

    Moderator: 

    Bob Siminski, Harness, Dickey & Pierce

  • Section 101 Litigation After Cellspin (RECORDING)

    Contains 6 Component(s), Includes Credits

    This webinar will provide tools and insights on courtroom tactics for litigating patent eligibility issues.

    In June, yet another twist occurred in the issues surrounding patent eligibility litigation.  In Cellspin, the Federal Circuit addressed whether a patent is presumed patent eligible when a patent is challenged on section 101 grounds.  District courts have been divided on this issue, often citing a concurring opinion by Judge Haldane Robert Mayer, where he opined that "no presumption of eligibility attends the section 101 inquiry."

    The Cellspin unanimous precedential panel opinion not only addressed that issue, but also provided explanations about the court’s views on the proper application of Berkheimer and Aatrix.  Those explanations are of special interest because some commentators believe that those  decisions have caused the success rate for invalidating patents early in a case under Alice to drop significantly. 

    This webinar will provide tools and insights on courtroom tactics for litigating patent eligibility issues.  The panelists are litigators who have successfully represented both patent owners and defendants, and include a vice president overseeing patent litigation at a major financial company.  They will discuss:

    • New strategies for patent owners that start with the infringement complaint
    • Ways defendants can counter plaintiff’s attempts to create factual disputes
    • Maintaining maximum flexibility for clients in an unpredictable environment


    Speakers:

    Maxine Graham, American Express

    Larry Hadley, Glaser Weil

    Kevin Rodkey, Finnegan

    Maxine Graham

    American Express

    Maxine Graham is vice president & senior IP counsel at American Express Company.  Maxine manages patent litigation and licensing.  She also handles IP aspects of M&A and commercial transactions.  Prior to joining American Express, Maxine was a patent litigator at Kirkland & Ellis.

    Larry Hadley

    Glaser Weil

    Larry Hadley joined Glaser Weil last fall as chair of its IP Department.  A patent litigator who has also negotiated license agreements, he has won many notable cases.  In Ultramercial v. WildTangent, he represented the plaintiff’s patent against patent-eligibility challenges in the Federal Circuit Court of Appeals and the U.S. Supreme Court.  

    Kevin Rodkey

    Finnegan LLP

    Kevin Rodkey is a partner at Finnegan who litigates in district courts and at the PTAB.  He has both attacked and defended patents at the PTAB under Covered Business Method review, where patent ineligibility under 35 U.S.C. § 101 can be used to establish invalidity.

  • Licensing: Impact of Contractual Provisions on Patent Challenges (RECORDING)

    Contains 4 Component(s), Includes Credits

    Patent owners and challengers alike need to understand the potential of a contractual clause to forestall a challenge at the PTAB. For example, can a boilerplate forum selection clause in a licensing agreement prevent a validity challenge at the PTAB, even though the clause makes no specific mention of PTAB proceedings?


    Patent owners and challengers alike need to understand the potential of a contractual clause to forestall a challenge at the PTAB.  For example, can a boilerplate forum selection clause in a licensing agreement prevent a validity challenge at the PTAB, even though the clause makes no specific mention of PTAB proceedings? 

    In April, Dodocase VR, Inc. v. MerchSource, LLC, a Federal Circuit non-precedential opinion about this issue, caught the attention of stakeholders who believe that it could lead to changes in licensing practices and future litigation.  In response to a petition by the licensee for en banc rehearing of this case, the Federal Circuit recently refused to reconsider its ruling, but this issue could eventually reach the Supreme Court.  MerchSource has signaled its intention to file a petition for writ of certiorari ‒ and a group of law professors have argued that the Federal Circuit was in error in Dodocase. 

    This and related topics are now likely to crop up frequently.  This summer, a different patent owner in a case involving an expired NDA did not succeed in fending off an IPR.  The devil may be in the details. 

    Our panelists, including a technology transactions attorney, a litigator, and the top IP counsel of a major pharma company, will address issues that licensors and licensees should analyze both before agreements are made and with respect to any existing agreements. 

    Speakers:

    WIlliam Krovain, Merck

    Bridget Smith, Knobbe Martens

    David Wille, Baker Botts

    William Krovatin

    Merck & Co Inc.

    Bill Krovatin is senior vice president and assistant general counsel at Merck & Co., Inc. and is responsible for IP matters at Merck including patents, trademarks, copyrights, and IP litigation.  Bill joined Merck in 1993 as an attorney in the IP litigation group.  Previously, he was an attorney at Hoffmann-La Roche and at Morgan & Finnegan.  He is the Board Liaison to IPO’s Licensing Committee. 

    Bridget Smith

    Knobbe Martens

    Bridget Smith is an IP litigation and transactions partner at Knobbe Martens, as well as co-chair of the firm's PTAB trials practice group.  Before law school, Bridget worked as a software engineer at Motorola and SAP.  She currently focuses her practice on issues related to blockchain, smart contracts, distributed ledgers, and cryptocurrencies. 

    David Wille

    Baker Botts L.L.P.

    David Wille is a partner at Baker Botts with a broad IP and technology practice.  The majority of his practice focuses on IP litigation and appellate work (including patent, trade secret, copyright, and trademark litigation), but he has substantial experience in licensing relating to patents, trade secrets, software, and copyrights.  He also handles secured transactions and mergers and acquisitions involving intellectual property. 

  • How To Protect Your Brand Internationally Using Graphic Logo Trademarks (RECORDING)

    Contains 4 Component(s), Includes Credits

    In this webinar, the panel will discuss the intersection between trademark rights and copyrights as it relates to graphic logo trademarks, and best practices for using these trademarks to protect your brand.

    International brand protection is both complicated and increasingly important.  In many countries, trademark owners combine copyright actions with trademark Infringement actions when engaging in anti-counterfeiting efforts.  In an increasingly digital marketplace, it behooves IP owners to be familiar with innovative approaches to enforce their trademarks and copyrights internationally — and with the effectiveness of including graphic logo trademarks in their portfolios. 

    Our panel, led by moderator Ms. Jacqueline Allshouse-Hutchens (Procter & Gamble Co.), will discuss the intersection between trademark rights and copyrights as it relates to graphic logo trademarks, and best practices for using these trademarks to protect your brand.  It will not just address how graphic logo trademarks may be used in developed economies, but how they have particular value in emerging markets, such as in India, China, the Asia-Pacific, and Africa where, for a number of reasons, consumers are more likely to recognize and associate a logo mark with the goods and/or services than a word mark. 

    Speakers: 

    Sheja Ehtesham, ALG India Law Offices LLP

    Victoria Longshaw, Houlihan² Patent and Trademark Attorneys

    Andreas Renck, Hogan Lovells LLP

    Moderator:

    Jacqueline Allshouse-Hutchens, Procter & Gamble Co.

    Jacqueline Allshouse-Hutchens

    Procter & Gamble Co.

    Sheja Ehtesham

    ALG India Law Offices LLP

    Sheja Ehtesham is a managing partner at ALG India Law Offices LLP, where she focuses on trademarks, service marks, trade dress, domain names, and industrial designs.  She is responsible for trademark and design portfolios of several large multinational and Fortune 500 companies.  Her profile includes preparing and filing applications for registration of trademarks, designs, and copyrights; drafting and filing responses to office actions; and drafting and filing affidavits of use.

    Victoria Longshaw

    Houlihan² Patent and Trademark Attorneys

    Victoria Longshaw is a partner at Houlihan² Patent and Trademark Attorneys.  She practices in the field of trademarks and designs before both the Australian and New Zealand intellectual property offices.  Her practice also includes drafting, prosecution and litigation of mainly biochemical, pharmaceutical, chemical engineering, metallurgy, process technology and mechanical matters before the Australian and New Zealand patent offices.  She is a Vice Chair of IPO’s International Trademark Law & Practice Committee.  

    Andreas Renck

    Hogan Lovells LLP

    Andreas Renck is a managing partner at Hogan Lovells.  He has been advising on intellectual property law, particularly EU trademark and Community design law, and international IP prosecution and litigation, for a number of international clients.  He has been involved in thousands of application and opposition proceedings before the EUIPO in Alicante.  His knowledge and skills span from representing clients in major cases before the General Court and Court of Justice in Luxembourg, to coordinating litigation proceedings in various European countries, to coordinating worldwide and regional settlements.

  • Doctrine of Equivalents: Tips for Plaintiffs, Defendants, and Patent Prosecutors (RECORDING)

    Contains 3 Component(s)

    This webinar takes as its starting point the May opinion of the Federal Circuit in Amgen v. Sandoz, which stated that “the doctrine of equivalents [DOE] applies only in exceptional cases” and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.”

    This webinar takes as its starting point the May opinion of the Federal Circuit in Amgen v. Sandoz, which stated that “the doctrine of equivalents [DOE] applies only in exceptional cases” and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” This led some experts to wonder if this decision heralded a new emphasis by the Court — or was merely a restatement of existing case law. 

    In addition to providing insights for litigators, this program will also prove useful to patent prosecutors by highlighting prosecution pitfalls that can lessen the chance of the patentee proving infringement by the DOE in the future. 

     Our panel of experienced litigators will analyze decisions including Duncan Parking Technologies, Inc. v. IPS Group, Inc., Enzo Biochem Inc. v. Applera Corp., Mylan Institutional LLC v. Aurobindo Pharma Ltd.and others.  They will discuss: 

    • How limitations on DOE play a role, and difficulties plaintiffs face in making a case for the DOE 
    • Trying to find vitality in the DOE, such as by successfully applying the “function/result/way” or the “insubstantial difference” test and 
    • The danger to successful plaintiffs from the “ensnarement” doctrine, which has seen increased application and can play out as a trial within a trial 

    Speakers:

          Brian Coggio, Fish & Richardson

          Mark Feldstein, Finnegan

          Sailesh Patel, Schiff Hardin

    Brian Coggio

    Fish & Richardson

    Brian Coggio is of counsel at Fish & Richardson.  He has extensive experience as a senior trial attorney and counselor and has litigated disputes across a wide range of technologies with a particular focus in the chemical, pharmaceutical, medical device, and biotechnology areas. Brian has also represented clients in numerous cases under the Hatch-Waxman Act, and is the author of “Ensnarement: A Second Bite at the Non-Infringement Apple.”

     

    Mark Feldstein

    Finnegan

    Mark Feldstein is a partner at Finnegan. He is a patent and trade secret litigator in U.S. district courts and also serves as lead counsel for clients in post-grant trial proceedings at the USPTO. He also maintains an active patent prosecution practice on behalf of domestic and foreign clients.  His practice encompasses issues involving pharmaceuticals, biochemistry, polymers, small molecule chemistry, nanotechnology, optics, and medical and analytic devices.  He holds a Ph.D. in chemistry.

     

    Sailesh Patel

    Schiff Hardin

    Sailesh Patel is a partner at Schiff Hardin. He is co-leader of its IP Group, also co-chairs the firm’s Pharmaceuticals and Biologics Patent Litigation Team, and serves on the firm’s executive committee. He frequently represents generic companies in Hatch-Waxman litigation. He has also represented clients in cases involving wind and solar technology, food processing, automotive components, and software, among other industries.  He has argued several cases at the Federal Circuit that involved the doctrine of equivalents.

  • Computer Forensics for IP Lawyers (RECORDING)

    Contains 4 Component(s), Includes Credits

    This webinar will be a high-level, introductory guide to computer forensics for IP lawyers.


    Speakers:

           Cathleen Donohoe, Pillsbury

           David Freskos, FTI Consulting

           Shannon Murphy, Winston & Strawn


    Cathleen Donohoe

    Pillsbury

    Cathleen Donohoe is an attorney in the Silicon Valley office of Pillsbury. She focuses her practice on cybersecurity, corporate investigations, and complex commercial litigation. She has successfully conducted and resolved numerous internal investigations for company boards of directors and committees involving breaches of contract and IP misappropriation.

    David Freskos

    FTI Consulting

    David Freskos is a senior director at FTI Consulting. He provides expert computer forensic and e-discovery consulting services to legal teams in support of investigations and litigation. David specializes in complex data collections from mobile devices, social media and cloud-based storage.

    Shannon Murphy

    Winston & Strawn LLP

    Shannon Murphy is a partner at Winston & Strawn. She is member of the firm’s Global Privacy and Data Security Task Force and focuses her practice on internal investigations, data protection counseling, and complex litigation, particularly matters involving potential criminal liability or trade secret issues. She is a specialist in computer forensics, and her data protection experience includes conducting a large-scale trade secrets internal investigation for a privately held financial investment company, which led to the federal conviction of two employees and a significant judgment.

     

  • Reasonable Measures to Protect Trade Secrets: Lessons for Litigators and In-House Counsel (RECORDING)

    Contains 4 Component(s), Includes Credits Recorded On: 05/30/2019

    Reasonable Measures to Protect Trade Secrets: Lessons for Litigators and In-House Counsel

    Speakers:

    Kenneth Corsello, IBM

    David Morrison, Goldberg Kohn

    Shannon Murphy, Winston & Strawn LLP

    Kenneth Corsello

    IBM

    David Morrison

    Goldberg Kohn

    Shannon Murphy

    Winston & Strawn LLP

    Shannon Murphy is a partner at Winston & Strawn. She is member of the firm’s Global Privacy and Data Security Task Force and focuses her practice on internal investigations, data protection counseling, and complex litigation, particularly matters involving potential criminal liability or trade secret issues. She is a specialist in computer forensics, and her data protection experience includes conducting a large-scale trade secrets internal investigation for a privately held financial investment company, which led to the federal conviction of two employees and a significant judgment.